Case decided by Justice Joseph Story that expanded the scope of copyright protection and laid the foundations to the later fair use doctrine. The case involved a controversy over the use in a George Washington biography of excerpts from his letters that were previously published in a collection of Washington's papers.

The commentary describes the ways in which the dispute created a clash between the popular republican ideology of the antebellum period, one that celebrated the broad and uninhibited access to knowledge by an informed citizenry, and a rising trend of understanding copyright in commercial market terms. The identity of the texts at issue sharpened this tension and produced competing images of Washington's papers as a national-public resource or commercial-private property. The commentary argues that Justice Story's decision of the case reinterpreted traditional copyright doctrines that had previously shielded most secondary uses of copyrighted works, subjected such uses to more stringent limitations, and laid the doctrinal and intellectual foundations for additional future developments in this vein.

3. Significance of the Case

Folsom v. Marsh, decided in 1841 by Justice Joseph Story (1779-1845) is commonly considered the origin of the Fair Use defense in American copyright law. In reality the case dealt mainly with the scope of copyright protection and the concept of infringement. The significance of the case derives from the important role it played in the development of three related aspects of American copyright law and ideology. First, Folsom v. Marsh was an important part of a group of copyright cases decided by Justice Story in the first half of the nineteenth century that began to transform the traditional legal and intellectual framework of copyright law.[1] These cases constituted a shift from a narrow understanding of copyright as a right to print and sell a copy of a particular text to a broader understanding of copyright as a general control of the market value of an intellectual work. Second, the case expressed a tension that characterized most nineteenth-century copyright debates in America: a tension between a republican ideology that celebrated the "cheap press" and popular access to printed texts, and developing concerns over commercial exploitation and authorial rights.[2] Third, the texts at the heart of the litigation were no ordinary books, but rather the letters of George Washington. It was thus one of the earliest dramatic clashes between private property rights created by copyright law and the public accessibility to materials deemed to be of peculiar public, cultural and national importance.[3]

4. Background and Protagonists

The various protagonists related to the case were all connected in a web of personal and professional connections. Like other early seminal copyright cases in America, the controversy also struck close to home because of the judicial figure involved - Justice Story - and his connections to the case. At the heart of the controversy was the twelve-volume work The Writings of George Washington by Jared Sparks (1789-1866).[4] Sparks was a Harvard graduate, a Unitarian minister, the editor of the North American Review and the future president of Harvard. Sparks began to consider publishing Washington's writings in 1824, after he was approached by Charles Folsom (1794-1872), an old school friend who at the time worked for Harvard University Press.[5] In January 1826 Sparks wrote to Justice Bushrod Washington (1762-1829), the nephew of the late president and Story's colleague at the U.S. Supreme Court, seeking access to Washington's papers for the second time.[6] Sparks mentioned as references Henry Wheaton (1785-1848), the court's reporter who a few years later would be embroiled in his own copyright battle in the Supreme Court,[7] Daniel Webster (1782-1852), the famous lawyer who would represent Wheaton in his copyright case, and Justice Story.[8] Sparks also used Story as an intermediary for trying to obtain his brethren Justice Washington's agreement. In February Story reported back that Washington and Chief Justice Marshall (1755-1835) had already prepared for publication three volumes of president Washington's papers. He added that Washington "deems these letters a sort of family inheritance, and that no person ought to be permitted to have anything to do with the publication unless he stands in his own intimate confidence."[9] In March Washington finally replied to Sparks, informed him that he and Chief Justice John Marshall were about to publish a three-volume selection of Washington's letters, and effectively refused to grant Sparks access.[10] Undeterred, Sparks continued the project, intending to rely on other sources.[11] He wrote to Story that "Washington's public letters and papers are the property of the nation. As such they ought to be before the nation."[12] In September 1826 Sparks tried his luck again. He wrote to Justice Washington and announced his intention to solicit materials from the public and publish the work with or without his cooperation. Sparks offered Justice Washington, in return for access to the Washington papers, to divide with him equally the copyright in the work and the profits derived from it, and also to subject the work to the Justice's "inspection and guidance."[13] Sparks also wrote Marshall and urged him to advise Justice Washington to accept the proposal.[14] In January 1827 Justice Washington informed Sparks that "we accept" the proposition, thereby making himself, Sparks, and possibly Marshall business partners.[15] Soon after, the extensive Washington manuscripts consisting of about forty thousand letters were shipped to Boston.[16] Sparks selected and edited the material and between 1834 and 1837 published the twelve volumes of the work, eleven of which contained Washington's papers and the twelfth Washington's biography written by Sparks. Throughout the years the work was published by different publishers, but in 1838 publishing rights were given to the publishing house of no other than Charles Folsom: Folsom, Wells and Thurston.

The infringing work, Reverend Charles W. Upham's (1802-1875) The Life of Washington, was quite different in character and purpose.[17] Upham, like Sparks, studied at Harvard and became a Unitarian minister.[18] The two most probably knew each other as in 1835 Upham wrote a biography of governor Sir Henry Vane as part of Spark's Library of American Biography.[19]The Life of Washington was published in 1840 by Marsh, Capen, Lyon, and Webb as part of their Massachusetts School Library series. The School Library series was part of the period's education reform movement and the republican ideology underlying it.[20] Extending and improving universal education, like the increase in affordable and accessible printed publications, was seen as an important part of cultivating a broad base of virtuous citizenry capable of governing itself and preventing the corruption of the republic. One outgrowth of the education reform movement was the appearance in Massachusetts and elsewhere of School Libraries series.[21] Such series were published under arrangements with private publishers in the hope of encouraging the establishment of school libraries by offering a selection of educational and affordable materials, free from sectarian or partisan biases. The Massachusetts series was encouraged, reviewed and approved by the state's Board of Education (of which Spark's was a member). Upham's work was thus explicitly part of an initiative based on the republican ideal of the broad dissemination of accessible and affordable knowledge. The work's nature suited this purpose. The Life of Washington was a two-volume biography of George Washington that according to Upham allowed Washington to "relate his own history, from his own lips."[22] Upham composed the biography using excerpts of Washington's papers, speeches, and letters and connected these materials with a short narrative text. Unfortunately for Upham, many of the Washington papers excerpted were derived from Spark's work. He himself acknowledged that his work "necessarily owes much of its materials to the very valuable collection... edited and published by Mr. Sparks."[23]

On 8 August, 1840, after some angry correspondence with Upham,[24] Sparks and his publishers filed a lawsuit against Upham and his publishers in the U.S. Circuit Court of the District of Massachusetts,[25] possibly fearing competition with a planned abridged version of Spark's biographical volume.[26] The plaintiffs were represented by Willard Phillips (1784-1873), an editor of and contributor to Sparks' North American Review,[27] the author of several patent law treatises[28] and one of the counsels in the 1839 Gray v. Russell.[29] Robert Rantoul Jr. (1805-1852), a member of the Massachusetts Board of Education and an enthusiastic supporter of the School Library series, represented the defendants. The Judge who wrote the decision was Supreme Court Justice Joseph Story.[30] Story, a Massachusetts native with strong ties to the state, was at the time a nineteen-year Supreme Court Justice and an eminent jurist. In addition to being the inaugural Dane Professor of Law at Harvard and an influential legal writer, Story had a particularly strong influence on American copyright and patent law that were then in their formative stages. Story also personally knew all or almost all the main players involved in the Folsom v. Marsh litigation. The attorneys, Phillips and Rantoul, Story knew through his judicial and political career.[31] Marsh, Capen, Lyon, and Webb published Story's A Familiar Exposition of the Constitution of the United States as part of the School Library series.[32] Upham was probably known to Story from Salem.[33] Bushrod Washington and John Marshall had been Story's colleagues in the Court for decades. Although both were deceased by then, their presence hung over the case, and, of course, Sparks continued to dutifully pay royalties from his book to Washington's and possibly Marshall's family. Most importantly, Story was intimately familiar with Sparks and his Washington Writings project. Story was aware of the project since its early days and in 1826 expressed enthusiasm and encouraged Sparks to pursue it.[34] He also advised Sparks on the commercial feasibility of the undertaking[35] and, as discussed above, helped Sparks in his communication with his Court brethren Washington and Marshall.[36] Two open letters that were published by Sparks in order to attract interest in the book were addressed to Story.[37] In addition, Story remained interested in the project throughout the publication process[38] and Sparks thanked him in the book's introduction for "the lively interest he has manifested in my labours, and for the benefit I have often derived from his suggestions and advice."[39]

5. The Litigation

Like many copyright cases of the period, Folsom v. Marsh was referred to a master in chancery for determining the resemblance between the works and the extent of copying. The master - George S. Hillard (1808-1879) - was a member of the same Massachusetts milieu as the other protagonists. Hillard was Story's favorite student at Harvard,[40] contributed to the North American Review, to Spark's Library of American Biography and knew both Sparks and Upham.[41] According to the report 353 pages of Upham's 866 page work were copied from passages of Spark's much longer 6,763 page work. All the identical passages were from Washington's writings and not from Spark's contributions. Of the 353 pages, 83 were copies from "official letters and documents" and 270 were taken from Washington's private letters and papers.[42]

The major legal questions in the case divided into two groups: the validity of Spark's copyright, and the infringement by Upham's work. Importantly, the questions and the analysis applied not to Spark's selection and arrangement of the materials or to his additions but to the original texts by Washington.[43] On the first front defendant raised several claims. First, it was argued that letters were "not literary compositions, and, therefore, not susceptible of being literary property."[44] Story, in line with cases going back to Pope v. Curll,[45] upheld the copyrightability of letters and suggested that the author of the letter retains ownership not just of the copyright but also of the physical manuscript.[46] At issue, however, were no ordinary letters, but rather the papers of the nation's father - the quintessential texts that under republican ideology should have been accessible and freely circulating among the citizenry. Trying to invoke this aspect defendant claimed that Washington's letters were unprotected because they were "public or official letters." Echoing Spark's words fifteen years earlier, Rantoul argued that the letters "were designed by the author for public use, and not for copyright, or private property."[47] Story reduced these arguments to a formal claim about government's powers vis-à-vis writings written by public officials in official capacity. Story agreed that in such cases the government may have a preempting interest in suppressing or publishing such writings, but was not prepared to agree that any private person enjoyed a right to publish such writings. The question was left undecided, since only one fifth of Washington's letters were written in an official capacity.[48] Story's rational for the general copyrightability of letters also provided a response to the ideological case for free circulation of publicly valuable texts. A rule that denied copyright in such writings, he wrote,

"would operate as a great discouragement upon the collection and preservation thereof; and the materials of history would become far more scanty, than they otherwise would be. What descendant, or representative of the deceased author, would undertake to publish, at his own risk and expense, any such papers; and what editor would be willing to employ his own learning, and judgment, and researches, in illustrating such works, if, the moment they were successful, and possessed the substantial patronage of the public, a rival bookseller might republish them, either in the same, or in a cheaper form, and thus either share with him, or take from him the whole profits? It is the supposed exclusive copyright in such writings, which now encourages their publication thereof, from time to time, after the author has passed to the grave. To this we owe, not merely, the publication of the writings of Washington, but of Franklin, and Jay, and Jefferson and Madison, and other distinguished statesmen of our own country."[49]

The republican case for the free circulation of the texts was thus met with the cold, calculating logic of market incentives. Story's observation ignored, of course, Spark's early difficulties in preserving Washington's legacy when he was denied access to the texts, and his resolve to proceed on the basis of other materials without obtaining permission from Washington's heirs.[50]

As it happened, the United States did recognize the public importance of Washington's writings. The papers were purchased from Washington's heirs for the "liberal price of 25,000 dollars" and became "national property." Formally, Story dismissed the relevance of this fact with the observation that "the government purchased the manuscripts, subject to the copyright already acquired by the plaintiffs."[51] More ironic, however, was his use of the public purchase earlier in the opinion. For Story the fact that Congress "purchased these very letters and manuscripts, at a great price, for the benefit of the nation" showed that they were treated as "private and most valuable property." He concluded that the proposition that "President Washington, therefore, intended them exclusively for public use, as a donation to the public, or did not esteem them of value as his own private property, appears to me to be a proposition, completely disproved by the evidence."[52] Thus, the fact that the nation purchased the physical manuscripts from Washington's heirs was used to establish the status of the intellectual work embodied in them as commercial-private property.

The second group of legal questions dealing with infringement invoked even more fundamental questions about the nature of copyright. Folsom v. Marsh together with a few other cases decided by Justice Story was an important transitory moment in American copyright. In the early nineteenth century copyright was still, for the most part, seen in traditional terms as a narrow entitlement to print and vend a copy. This concept, derived from copyright's origin as a stationer's trade privilege, created a limited scope to copyright protection. Beyond the core of verbatim reproduction copyright protected only a narrow penumbra of derivative uses defined by two inquires: whether the defendant's changes were merely colorable and designed to evade the prohibition on verbatim reproduction;[53] and whether the defendant's work contained any new intellectual contribution or was merely a complete substitute of the original.[54] Traditional English doctrine translated these principles to rules that allowed ample breathing space to abridgments, translations, imitations and other derivative uses.[55] Justice Story, while restating the traditional formulas, set out to change both this doctrinal arrangement and the intellectual framework in which it was rooted.

The Folsom v. Marsh opinion begins with Story's famous observation that copyright (and patent) "approach, nearer than any other class of cases belonging to forensic discussions, to what may be called the metaphysics of the law, where the distinctions are, or at least may be, very subtile and refined, and, sometimes, almost evanescent."[56] What made copyright "metaphysical" from Story's perspective was the fact that he was expanding it beyond its traditional narrow scope. In some cases, Story explained, "it is often exceedingly obvious, that the whole substance of one work has been copied from another, with slight omissions and formal differences only, which can be treated in no other way than as studied evasions."[57] The evanescent quality of copyright appeared "whereas, in other cases, the identity of the two works in substance, and the question of piracy...depend upon a nice balance."[58] Story did not reject the older precedents that shielded abridgments and other derivative uses, but relying on newer English precedents and his own interpretations he undermined their basis and opened the door for expanding the scope of copyright. According to Story, even beyond the zone of verbatim or evasive reproduction, the question was always whether a particular derivative use was "fair and bona fide."[59] The answers to such questions depended on a fine calculus involving such factors as "the nature and objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work."[60] The engine behind Story's doctrinal innovation was his new emphasis on seeing the intellectual works in terms of market value. If previous doctrine focused on the new contribution of a user of a copyrighted work, Story shifted the emphasis to protecting the market value of the original work. Time and again he resorted to criteria such as whether the "value of the original is sensibly diminished" or "the value of the materials taken, and the importance of it to the sale of the original work."[61] A new market-oriented concept of the work as market value, thus, functioned both as counterweight to republican ideology, which stressed the free circulation of knowledge, and as a substitute for copyright's traditional focus on the narrow right to print a text.

Once the legal framework was defined in these terms, Story found with "no doubt whatever" that an infringement had occurred. The conclusion was based mainly on the finding that Washington's letters constituted Upham's work's "greatest, nay, its essential value," and on little discussion or application of the various factors previously mentioned.[62] Story confessed that he had "come to this conclusion, not without some regret, that it may interfere, in some measure, with the very meritorious labors of the defendants, in their great undertaking of a series of works adapted to school libraries," expressed his hope that "some means may be found, to produce an amicable settlement of this unhappy controversy," and ordered a perpetual injunction.[63] No evidence of any settlement has been found.

6. The Legacy of Folsom v. Marsh

The legacy of Folsom v. Marsh is full of ironies. Today the case is usually remembered as the origin of the fair use doctrine in American copyright law. For over a century, however, courts hardly cited Folsom in the fair use context, but rather did so when discussing the question of infringement. Part of the reason, no doubt, was that the modern sharp distinction between determining infringement and applying the fair use defense only began to appear at the late nineteenth and early twentieth century. Folsom became an important fair use case in the second half of the twentieth century.[64] In the 1980s it began to appear in Supreme Court cases and its canonical status was established in the 1994 Cambell v. Acuff-Rose Music Inc. where the Supreme Court identified Folsom v. Marsh as the foundation of the fair use doctrine.[65]

On the substantive level, Folsom is often celebrated as establishing one of the major safeguards of copyright law against over-protection and for maintaining the balance between private exclusion power and public accessibility to information and knowledge. When it was decided, however, Folsom was a key part of a move to expand the scope of copyright protection and it laid the intellectual foundations to the future expansions that would follow. Justice Story's reinterpretation of copyright law changed its baseline of protection. The traditional scheme protected against verbatim reproduction and an additional narrow zone of evasive changes. It treated most derivative uses of existing works as legitimate and non-infringing. By contrast, Story's new framework treated any secondary use of an existing work as potentially infringing, allowing it to escape only if it could be established under the new complex and unpredictable tests that the use was "fair." Folsom v. Marsh itself never rejected the traditional rules that shielded various secondary uses such as abridgements or translations. Under the new framework it established, however, these rules lost their basis and came under increasing strain. Throughout the century they were narrowed down and eventually rejected, one by one.

In his early nineteenth century decisions Story also created the intellectual support for the future doctrinal changes. Instead of the traditional view of copyright as a right to print a specific text he offered a new concept of copyright as general control of the market value of an intellectual work. Although not completely deserted, the former emphasis on the novel contribution of subsequent users was replaced by a focus on the possible injurious effects on the market value of the original. Later in the century, treatise writers and judges used these elements and often cited to Story's decisions in order to construct a new ideology of copyright law. This ideological framework combined a metaphysical concept of the copyrighted work as an intellectual essence that could take many specific forms[66] and a dominant concern for protecting the work's commercial value in all secondary markets that could be traced to it.[67]Folsom v. Marsh together with a handful of other decisions were the seeds that later germinated and produced these far-reaching changes.

7. References

Governmental papers and legislation

United Kingdom

Gyles v. Wilcox (1741) 2 Atk 141.

Millar v. Taylor (1769) 4 Burr 2303.

Sayre v. Moore (1785) 1 East 361.

Tonson v. Walker (1752) 3 Swans 671.

United States

Campbell v. Acuff-Rose Music Inc., 510 U.S. 569 (1994).

Emerson v. Davies, 8 F. Cases 615 (C.C.D.Mass. 1845).

Folsom v. Marsh, 9 F.Cases 342 (C.C.D.Mass. 1841).

Gray v. Russell, 10 F. Cases 1035 (C.C.D.Mass. 1839).

Wheaton v. Peters, 33 U.S. 591 (1834).

Act of February 2, 1819. Statutes at Large 3 (1819).

Primary Sources

Adams, Herbert Baxter. The Life and Writings of Jared Sparks (Boston: Houghton, Mifflin and Company, 1893)

Curtis, George Ticknor. A Treatise on the Law of Copyright in Books, Dramatic, and Musical Compositions, Letters, and other Manuscripts, Engravings, and Sculpture as Enacted and Administered in England and America (Boston: C.C. Little and J. Brown, 1847)

Drone, Eaton S. A Treatise on the Law of Property in Intellectual Productions in Great Britain and the United States: Embracing Copyright in Works of Literature and Art, and Playwright in Dramatic and Musical Compositions (Boston: Little, Brown 1879)

Phillips, Willard. The Law of Patents for Inventions (Boston: American Stationers' Co., 1837)

Sparks, Jared. The Writings of George Washington: Being His Correspondence, Addresses, Messages, and Other Papers, Official and Private: Selected and Published from the Original Manuscripts: With a Life of the Author, Notes, and Illustrations (Boston: American Stationers' Co., 1834-1837)

Story, Joseph. A Familiar Exposition of the Constitution of the United States: Containing a Brief Commentary on Every Clause, Explaining the True Nature, Reasons and Objects Thereof: Designed for the Use of School Libraries and General Readers: with an Appendix Containing Important Public Documents Illustrative of the Constitution (Boston: Marsh, Capen, Lyon, and Webb, 1840)

Upham, Charles Wentworth. The Life of Washington, in the Form of an Autobiography; the Narrative Being to a Great Extent Conducted by Himself; in Extracts and Selections from his own Writings. 2 vols (Boston: Marsh, Capen, Lyon, and Webb, 1841)

Secondary Books and Articles

Culver, Michael. "An Examination of the July 8, 1838 Letter from Harriet Martineau to United States Supreme Court Joseph Story As It Pertains to United States Copyright Law." J. Copyright Soc'y 32 (1984): 38-45

[4]Jared Sparks, The Writings of George Washington: Being His Correspondence, Addresses, Messages, and Other Papers, Official and Private: Selected and Published from the Original Manuscripts: With a Life of the Author, Notes, and Illustrations (Boston: American Stationers' Co.,1834-1837).

[11] Ibid., 405-406; Michael Culver, "An Examination of the July 8, 1838 Letter from Harriet Martineau to United States Supreme Court Joseph Story As It Pertains to United States Copyright Law," J. Copyright Soc'y 32 (1984): 38, 40-41.

[15] It is unclear whether Marshall formally owned part of the copyright in the work or if he shared in its profits. According to the opinion in Folsom, Marshall "acquired an interest" in the Washington papers. See, Folsom V. Marsh, 9 F. Cases 342, 345 (C.C.D. Mass. 1841). What exactly was the nature of that "interest" remains unclear.

[17] Charles Wentworth Upham, The Life of Washington, in the Form of an Autobiography; the Narrative Being to a Great Extent Conducted by Himself; in Extracts and Selections from his own Writings, 2 vols. (Boston: Marsh, Capen, Lyon, and Webb, 1841).

[25] Under an 1819 statute the U.S. circuit courts had original jurisdiction over all cases arising under the federal copyright and patent laws. Act of February 2, 1819, The Statutes at Large of the United States of America 3, ch. 19, 481-82 (1819).

[30] At the time Circuit Courts panels consisted of the District Court judge of the relevant district and a U.S. Supreme Court Justice in charge of the circuit. Thus many of the early American copyright decisions issued by Circuit Courts were written by Supreme Court Justices.

[32] Joseph Story, A Familiar Exposition of the Constitution of the United States: Containing a Brief Commentary on Every Clause, Explaining the True Nature, Reasons and Objects Thereof: Designed for the Use of School Libraries and General Readers: with an Appendix Containing Important Public Documents Illustrative of the Constitution (Boston: March, Capen, Lyon, and Webb, 1840).

[43] Story expressly wrote that "there is no complaint, that Mr. Upham has taken his narrative part" and described Upham's work as injurious to "the rights of property of the representatives and assignees of President Washington." His analysis of copyrightability clearly referred to the letters themselves rather than to Spark's selection. Under applicable law at the time the letters were protected by common law copyright until publication and, provided that all formalities were met, by statutory copyright from the moment of publication. Folsom v. Marsh, 9 F. Cases 345.

[63] Ibid. The Injunction restrained the defendants from "printing, publishing, selling, or disposing of any copy or copies of the work complained of; the ‘Life of Washington,' by the Rev. Charles W. Upham, containing any of the three hundred and nineteen letters of Washington." In reality the Master's report did not refer to the 319 letters but rather to the 319 pages of Upham's work containing passages from Washington letters that were not previously published. Apparently the injunction also included the letters written in an official capacity whose legal status was not decided in the case.

[64] Reece, in his work "The Story of Folsom V. Marsh" (292-93), traces the rise of Folsom to a 1954 University of Chicago Law Review Comment by Chief Judge Leon Yankwich of the Southern District of California. See, Leon Yankwich, "What is Fair Use?," University of Chicago Law Review 22 (1954): 203.

[66] See e.g. George Ticknor Curtis, A Treatise on the Law of Copyright in Books, Dramatic, and Musical Compositions, Letters, and other Manuscripts, Engravings, and Sculpture as Enacted and Administered in England and America (Boston: C.C. Little and J. Brown, 1847), 293; (us_1847); Eaton S. Drone, A Treatise on the Law of Property in Intellectual Productions in Great Britain and the United States: Embracing Copyright in Works of Literature and Art, and Playwright in Dramatic and Musical Compositions (Boston: Little, Brown 1879), 97-98; (us_1879a).

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